- PTAB · Jul 9, 2024 · IPR2024-00119 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of success on at least one claim despite finding Wong was not shown to be prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–17 of the ’760 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5 (citing Ex. 1007 ¶¶ 36–42). Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’760 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Prelim. Resp. 9 (citing Ex. 1001, 3:15–17, 7:49–51, 8:6–8, 9:10–12). We agree with Patent Owner that “slidably” in claim 1 requires that some continuous surface-to-surface contact must occur. Patent Owner further argues, however, that the figures, such as Figure 12A of the ’760 Patent, provide minimal clearance between the remote/latch release. Prelim. Resp. 10–11. These figures merely depict embodiments of an optical fiber connector after final assembly. See, e.g., Ex. 1001, 4:51–57 (stating that Figure 12A depicts “one embodiment” and that Figure 12B is a top view of the Figure 12A connector). We do not discern anything about the word “slidably” or claim 1 that requires minimal clearance after assembly. We also do not discern anything about claim 1 that requires that, for example, the inner portion of the groove slide against the lower portion of the latch release. Rather, the inner portion of the groove must be above to “receive” the lower portion of the latch release. How does it receive it? It does so “slidably.” The recitation is met so long as the inner portion of the groove is configured such that it can receive the lower portion of the latch release via any sliding. Neither the inner portion nor the lower portion, in particular, must have sliding surface-to-surface contact. In a similar way, neither the outer portion of the groove nor the narrower portion of the latch release must have sliding surface-to-surface contact. Thus, rather than importing a minimal clearance requirement into claim 1’s “slidably” recitations and rather than requiring that specific components must slide (when the claim does not state as much), we understand, for example, “the inner portion of the groove being configured to slidably receive the lower portion of the latch release” to mean that the inner portion of the groove has structure capable of receiving the lower portion of the latch release via a sliding motion. Such sliding could include any degree of surface-to-surface contact between parts; for example, the bottom surface of the latch release could slide along the upper surface of the groove. Similarly, “the outer portion of the groove being configured to slidably receive the narrower portion of the latch release” means that the outer portion of the groove has structure capable of receiving the narrower portion of the latch release via a sliding motion.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“connectors. Pet. 14–16. Petitioner argues that Raven teaches a connector that includes two ferrules and that Kuffel teaches an MPO connector that contains MT ferrules. Id. at 15–17 (citing, e.g., Ex. 1003, Fig. 1; Ex. 1004, 5:16–27; Ex. 1007 ¶¶ 150–151). Petitioner argues that a person having ordinary skill in the art would have understood that Kuffel’s MPO connectors (which contain MT ferrules) would be used to increase density within data transmission networks. Id. at 16 (citing, e.g., Ex. 1004, 4:8–14; Ex. 1007 ¶ 147; Ex. 1015; Ex. 1025; Ex. 1027). Petitioner argues that a person having ordinary skill in the art would have modified Raven’s two ferrule connector to use an MT ferrule (as Kuffel teaches) and argues that such a modification would improve Raven’s device in the same way as described in Kuffel. Id. at 17–18 (citing Ex. 1007 ¶¶ 152–154). Petitioner argues that there would have been a reasonable expectation of success in making this modification. Id. at 19 (citing Ex. 1007 ¶ 155). Petitioner argues that the modification (1) is supported by the disclosures of Kuffel and Raven, (2) represents a simple substitution, and (3) would enable Raven to incorporate a multi-fiber connector. Id. at 20–23 (citing, e.g., Ex. 1007 ¶¶ 159–169). Based on the evidence presented, Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Raven and Kuffel with a reasonable expectation of success.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,415,760 - PTAB · Jul 9, 2024 · IPR2024-00118 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–28 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Nhep and Watanabe.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and any response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’413 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 Petitioner states that “if [this proceeding is] instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Pet. 113. In view of Petitioner’s stipulation, we do not discretionarily deny institution. Katherine” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(1) at least a bachelor’s degree in mechanical engineering, electrical engineering, physics, or a related field and three years of experience in fiber optics and fiber optic connectors; (2) a master’s degree in mechanical engineering, electrical engineering, physics, or a related field and at least one year of experience in fiber optics and fiber optic connectors; or (3) industry experience (at least three years) designing fiber optic connectors in lieu of a formal degree. Pet. 8–9 (citing Ex. 1003 ¶¶ 44–50). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’413 patent specification and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. Claim Construction We interpret the challenged claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. 8 The present record does not include any objective evidence of nonobviousness. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that it “does not believe any claim terms require specific construction and thus should receive their plain and ordinary meaning, in the context of the ’413 patent specification, under the Phillips standard.” Pet. 9 (citing Ex. 1003 ¶¶ 91–93). For purposes of this Decision, no claim terms require express construction.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,340,413 - PTAB · Jul 9, 2024 · IPR2024-00121 · APJ Barbara A Parvis · IPR · Institution
The Board instituted inter partes review of claims 1–53 on all petitioned grounds, finding a reasonable likelihood that Lee and Raven render claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and any response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’701 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“Petitioner argues that “the prior art provides a motivation” to make Petitioner’s modifications. Id. at 20. In particular, Petitioner relies on Raven’s teaching (discussed above in Section III.D.2) that “it is not uncommon for the installers to get confused between transmitting and receiving cables.” Ex. 1006, 1:13–25. Raven continues that this can make it “necessary for the installer to replace the existing cable or remove the connecting head from the fibres and effectively remanufacture the cable on site, which is very cumbersome and time consuming.” Id. at 1:32–35. Raven describes that its addresses the problem by disclosing a “fibre optic cable assembly and a method for changing the polarity of first and second optical fibres in a fibre optic cable assembly.” Id. at 2:17–19. Petitioner argues a person of ordinary skill in the art would have been motivated to make the modifications to “Lee’s connector to change polarity easily.” Pet. 19 (citing Ex. 1003 ¶¶ 193–200); see also id. at 27 (citing Ex. 1003 ¶ 221) (arguing the proposed modifications would have allowed “the polarity of Lee’s connector to be altered easily without the need to remanufacture the cable.”). Petitioner also argues the following: [T]his modification involves applying a known technique (Raven’s removable latch configuration) to a similar device (Lee’s connector) in the same way (providing latch couplings on exterior walls of a connector housing to receive a removable latch). A POSITA would have understood that there are a finite number of ways of making Lee’s latch arm 28 removably coupled to the exterior walls of its connector housing.” slip op. at 20
- Skill levelSkill level petitioner adoptedOther
“had “at least an undergraduate degree in mechanical engineering, industrial engineering, or a closely related field and one year of experience working with connectors.” Pet. 4 (citing Ex. 1003 ¶¶ 117–128). Petitioner adds that “[a]dditional relevant experience can compensate for a lack of relevant education, and vice versa.” Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’701 patent specification and the prior art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that the Petition “affords all terms their ordinary and customary meaning.” Pet. 4 (citing Ex. 1003 ¶¶ 129–131). For purposes of this Decision, no claim terms require express construction.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,181,701 - PTAB · Jul 9, 2024 · IPR2024-00116 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted review of claims 22–40 on all petition grounds after finding a reasonable likelihood that US Conec would prevail on at least one claim, including anticipation of claim 23 by Nguyen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and any response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’369 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“1 Petitioner states that “if instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Pet. 102. In view of Petitioner’s stipulation, we do not discretionarily deny institution. Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), at 3–4, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to section II.A).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been a person having: (1) at least a bachelor’s degree in mechanical engineering, electrical engineering, physics, or a related field and three years of experience in fiber optics and fiber optic connectors; (2) a master’s degree in mechanical engineering, electrical engineering, physics, or a related field and at least one year of experience in fiber optics and fiber optic connectors; or (3) industry experience (at least three years) designing fiber optic connectors in lieu of a formal degree.” slip op. at 6
Claim construction§ 102 anticipationDiscretionary denialcites GrahamPatents in suitUS 11,307,369 - PTAB · Jul 9, 2024 · IPR2024-00115 · APJ Elizabeth M Roesel · IPR · Institution
Instituted review of claims 1–22 on all petitioned grounds after finding a reasonable likelihood of prevailing on claim 1 as obvious over Scherer and Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Conclusion for Claim 1 We determine that Petitioner establishes a reasonable likelihood of prevailing on its challenge to claim 1 as obvious in view of Scherer and Lee.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Other
“1 Petitioner states that “if instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Pet. 102. In view of Petitioner’s stipulation, we do not discretionarily deny institution. Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), at 3–4, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to section II.A).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“3. Reasons to Combine Petitioner contends that it would have been obvious to modify Scherer’s connector in two ways. Pet. 14. First, Petitioner asserts it would have been obvious “to orient first and second optical fiber ferrules along the transverse axis of Scherer’s connector.” Id. (citing Ex. 1011 ¶¶ 128–133). Second, Petitioner asserts it would have been obvious “to modify Scherer’s extender 330d and lever 360a such that the edge defining the front end of the opening slides longitudinally along the upper surface of the lever 360a when the extender 330d is pulled rearwardly to depress the lever 360a.” Id. (citing Ex. 1011 ¶ 134). Addressing the first modification, Petitioner contends that it would have been obvious to arrange an array of fibers perpendicular to the longitudinal axis of the fiber, and the choice between the horizontal and vertical axes is “merely choosing one of the few and finite available options.” Pet. 14–15 (citing Ex. 1011 ¶¶ 135–144). Petitioner contends that, in view of the dual connections shown in Scherer Figures 11–13, it would have been obvious to modify the connector of Scherer Figure 14 “to make multiple connections from a single optical fiber transmission line 52a.” Pet. 15 (citing Ex. 1011 ¶¶ 135–144), 20 (citing Ex. 1011 ¶¶ 145–159). According to Petitioner, Lee provides an alternative solution for making multiple connections from a single optical fiber cable. Pet. 16, 21. Petitioner contends that a desire for increased connector density would have motivated a POSITA “to modify Scherer’s connector hood to include multiple ferrules positioned relative to the lever as disclosed in Lee.” Pet. 16–17 (citing Ex. 1011 ¶¶ 135–144), 22. Petitioner’s first modification relates to claim elements 1.1 and 1.3, as discussed below. Pet. 19–22, 26– 27.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that the “Petition affords all terms their ordinary and customary meaning.” Pet. 4. For purposes of this Decision, no claim terms require express construction.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,307,369 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution deniedPTAB · Jun 21, 2024 · IPR2024-00318 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5, 7, 8, 10, 12, 14, 17, 18, 20, or 21 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record, we conclude Petitioner does not establish a reasonable likelihood of prevailing in demonstrating the unpatentability of any of the challenged claims of the ’196 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“that any of the challenged claims of the ’196 patent is unpatentable on the grounds asserted in the Petition.4 V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 4 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the either state of the related litigation or the filing of multiple petitions challenging the ’196 patent.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and at least two years of experience working in the field. Ex. 1003, ¶¶50–51. Less work experience may be compensated by a higher level of education or vice versa. Id. Relevant working experience would include experience with cellular telecommunications and networking, radio-access networking architectures, protocols and signal propagation in wireless networks. Id. 3 Neither party presents objective evidence of nonobviousness. Pet. 3 (citing Ex. 1003 ¶¶ 50–51). Petitioner’s proposal is undisputed. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, we find that Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’196 patent and the asserted prior art references.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“Petitioner states that it “do[es] not believe any term needs to be expressly construed beyond its plain and ordinary meaning.” Pet. 10. Patent Owner agrees that “no explicit claim construction is necessary for the purposes of deciding institution.” Prelim. Resp. 5. For purposes of this decision, we use the plain and ordinary meaning of the terms of the claims. Based on the record before us, we need not make express determinations regarding claim construction to resolve a dispute between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,554,196 - Sierra Wireless, Inc. / Thales Dis Ais Deutschland GmbH v. Sisvel International S.A.Some claims unpatentablePTAB · May 28, 2024 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Remand
On remand, claims 5–7 and 10 are unpatentable as obvious over Chen; claim 8 was not shown unpatentable over the asserted grounds.
RulingsRemand decision- RemandOther
“with the Federal Circuit. Paper 53. Petitioner subsequently filed a Notice of Cross-Appeal. Paper 54. The Federal Circuit rendered its Decision on October 6, 2023 (Paper 58) and entered its mandate on November 29, 2023 (Paper 57). In its Decision, the Federal Circuit vacated our conclusion regarding the “means for detecting” limitation recited in claims 5 and 10. Sisvel, 82 F.4th at 1364, 1370. The Court ordered that, on remand, we “must conduct the analysis appropriate for Noah group two, including whether any of the protocols are clearly linked or associated with ‘the function recited in the claim,’[ ] and whether they are ‘adequate structure for performing this function.’” Id. at 1370 (citing Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1313 (Fed. Cir. 2012)). The Court further held that “the Board should have considered the knowledge of a skilled artisan,” and specifically, Dr. Kakaes’s expert testimony, “to assess whether the protocol name sufficiently discloses an understood algorithm corresponding to the means-plus-function limitation.” Id. at 1369. The Court also held that we “must either (1) determine whether the claim[s] [are] indefinite and then whether such indefiniteness renders it impossible to adjudicate a prior-art challenge on the merits, or (2) resolve the prior art challenge to the patentability of the claims despite the potential indefiniteness of the means-plus-function term.” Id. at 1370. After the Federal Circuit issued its mandate, we ordered the parties to brief these issues including “the supported construction of the ‘means for detecting’ claim term, as well as the attendant patentability issues of indefiniteness and impossibility as relevant to this claim term.” Paper 59, 3. Petitioner filed an Opening Brief on Remand (Paper 63, “Rem. Pet. Br.”). Patent Owner thereafter filed a Response to Petition (Paper 64, “Rem. PO” slip op. at 4
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In its Patent Owner’s Response, Patent Owner states: [A] person having ordinary skill at the time of invention— September 10, 1999—in the relevant art would be one with a bachelor’s degree in electrical engineering or computer sciences and telecommunications networks, along with at least three or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 7 (citing Inst. Dec. 9; Ex. 2001 ¶ 27). In our original Final Written Decision, we determined that: Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art. Final Dec. 10. Based on our review of the entire record, we are not apprised of nor can we ascertain any reason to deviate from this determination. As such, in this Final Written Decision on remand, we maintain the definition of level of ordinary skill in the art from the original Final Written Decision.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Claim limitations that include the terms “means” or “means for” are presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Claims subject to 35 U.S.C. § 112 ¶ 6 are construed in a “two-step process,” whereby we “first identify the claimed function,” and then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. at 1351. Accordingly, the rules governing this inter partes review require that Petitioner “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). It is well established that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Pty Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm.”). The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted)).” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“For example, with respect to the CRC protocol, Dr. Kakaes testifies that “CRCs are often referred to as ‘error detecting codes’ as they are typically used[] to detect whether a received data message is or is not erroneous.” Ex. 1002 ¶ 88. Dr. Kakaes further testifies that [t]o use a CRC, the transmitter runs a polynomial division of the data block (before forward error correcting code has been applied, if any) to calculate a “remainder” consisting of a predetermined number of bits, for example 16, which are also called “parity bits,” or “check bits,” or “checksum bits,” or “CRC bits” that are attached to the block to be encoded and then transmitted, in whichever way it may or may not be encoded, punctured, etc. After reception and channel decoding (recall that means determining the “maximum likelihood” message), the receiver then runs the same polynomial division of the received decoded data block (which includes the parity bits) and, if the result does not match the “remainder,” i.e., the “parity bits” are not consistent with the determined message, the decoded data block “fails” the “check,” i.e., is declared as being erroneous. As it turns out such a determination is never wrong. In other words, the “false negative” rate is 0. Id. (emphasis added). With regard to the ARQ protocol, Dr. Kakaes testifies that “[i]n an ARQ scheme, the receiver automatically requests retransmission of a data packet if it is detected to be erroneous, such as through the use of CRC, as discussed above.” Id. ¶ 91.” slip op. at 20
Patent outcomesUS 6,529,561 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,529,561 - PTAB · May 22, 2024 · IPR2024-00137 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 9, 10, 12, 20, 21, and 23 over Chitrapu and TS 36.300, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“5 weigh in favor of exercising our discretion to deny institution. For the reasons discussed below, we conclude that Fintiv factors 1–5 weigh in favor of denying institution. Because Fintiv factors 1–5 favor denial of institution, we must also determine whether the Petition presents compelling merits. See” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“reference “explicitly suggests a POSITA[5] look to 3GPP standards” (Pet. 25–26 (citing Ex. 1003 ¶ 7; Ex. 1005 ¶ 117)) and the secondary reference is a 3GPP Technical Specification (Ex. 1223, 1). Petitioner’s argument is supported by Chitrapu and TS 36.300, respectively. See Ex. 1003 ¶ 7 (describing systems “constructed in accordance with current specifications of the 3rd Generation Partnership Program”); Ex. 1223 (describing that “[t]his technical Specification has been produced by the 3rd Generation Partnership Project”). At this stage, Patent Owner disputes Petitioner’s argument for only one limitation of claim 9 (Prelim. Resp. 8–20) and we find Patent Owner’s dispute does not undermine Petitioner’s showing on the current record. See infra § IV.D.3.c. For these reasons and the reasons discussed further below (see § IV.D.3), based on the record before us, we determine the Petition presents a compelling, meritorious challenge for independent claim 9. We, therefore, determine the facts of this case do not warrant discretionary denial.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivated to implement” Chitrapu’s “‘smart handover’ process” “using the [more detailed description of the steps of handover] of TS 36.300” (Pet. 26– 30 (citing, e.g., Ex. 1003 ¶ 74; Ex. 1005 ¶¶ 120–123, 125, 160–162, 168, 178)), we find, based on the preliminary record, that Petitioner’s reason is supported by Chitrapu and TS 36.300, respectively. Petitioner, more specifically, argues “while Chitrapu describes the ‘negotiation’ and ‘execution’ of these steps [that is, steps of a handover] at a high level, the specific implementation details of these messages are not disclosed,” but TS 36.300 describes “the specific messages associated with that implementation.” Pet. 26–27.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“11 of Chitrapu discloses or suggests that the source base station determines whether or not the UE is ‘current covered’ by the target base station before initiating a handoff.” Prelim. Resp. 9–10. We find, based on the preliminary record at this juncture, that Patent Owner’s argument is contrary to Chitrapu’s disclosures. In particular, Chitrapu describes, “[w]here a handover is to occur, the new serving base station will first implement the selected beams determined for it and acquire the UE communication, before the original serving base station implements its new beam pattern.” Ex. 1003 ¶ 109 (emphasis added). Chitrapu describes expressly that a handover involves a “new” serving base station that differs from the “original” serving base station and that the “new serving base station . . . acquire[s] the UE communication.” Id. Chitrapu describes that, as illustrated in Figure 11, the “general process for conducting ‘smart’ handover” may “result in no handover being made.” Id. ¶ 108 (emphasis added). Figure 11 similarly states that either “THE TARGET BASE STATION,” which differs from the “SERVING BASE STATION” is determined and a “HANDOVER” is executed or the serving base station “MAINTAINS COMMUNICATION THROUGH REFOCUSING BEAM.” Id. at Fig. 11. The handover determination itself is a determination that a “UE” communication, will be acquired by a “new serving base station.” See, e.g., Ex. 1003 ¶ 109. Based on the preliminary record before us at this juncture, we find that the requirement of “a determination . . . that the wireless device is not currently covered by the first wireless network but is capable of being covered by the first wireless network” recited in limitation 9.a(2) is taught by Chitrapu’s handover determination. See, e.g., Ex. 1003 ¶ 109, Fig. 11; see also id. ¶ 106 (describing a “handover consideration process” involving “candidate cells,” which also are referred to as “candidate target cells”), ¶ 107 (describing “if a neighboring cell is not able to efficiently accept the UE, it may be determined that the original cell is best situation and should continue to serve the UE” (emphasis added)), ¶ 108 (describing a “general process for conducting ‘smart’ handover, which may actually result in no handover being made” (emphasis added)).” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,094,888 - PTAB · Apr 30, 2024 · IPR2024-00135 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 23–27 on all asserted grounds, finding a reasonable likelihood that claim 23 is obvious over Chang; it deferred claim 27’s merits for trial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and at least two years of experience working in the field. Ex. 1003, ¶41. This description is approximate and a higher level of education might make up for less experience and vice versa. Id. Relevant working experience would include experience with cellular telecommunications and networking, radio-access networking architectures, protocols and signal propagation in wireless networks. Ex. 1003, ¶41. More education can supplement practical experience and vice versa. Ex. 1003, ¶41.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We preliminarily find that Petitioner’s proposed construction that “data updates” are “data that needs to be sent to the mobile device” (Pet. 19) is consistent with the recitation in the preamble and element 23.4 of receiving “data updates” and “a data update,” respectively. Claim 23 recites a “device,” rather than “the mobile device.” Claim 23, however, also recites “coverage by a first network” and “coverage by a second network” (emphasis added), which is consistent with Petitioner’s proposed construction that the “device” is a “mobile device.” We also preliminarily find that Petitioner’s proposed construction is consistent with the ’196 patent Specification. In particular, the ’196 patent Specification describes an interval use device receiving “a data update over the network,” which “may be for a single application” or “may be for multiple applications.” Ex. 1001, 11:9–25. The ’196 patent Specification describes exemplary applications as including “social networking applications, email, Really Simple Syndication (RSS) feeds, map updates, game update[s], sports score update[s], or the like.” Id. at 6:59–64; see also id. at 10:23–35 (providing the same list of exemplary applications). Regarding the recitation in claim 23 of a “device,” rather than “the mobile device,” the ’196 patent Specification is consistent with Petitioner’s proposed construction. The ’196 patent describes that computing device 700 “may be configured as a[n] interval use device” (id. at 15:23–25) and that computing device 700 “may be implemented as a portion of a small-form factor portable (or mobile) electronic device.” Id. at 16:59–65 (emphasis added). Also, regarding “coverage” recited in claim 23, the ’196 patent describes “providing network coverage by cycling through beam shape coverage configurations” (id. at code (57)) and that “coverage” is provided by “wireless communication networks.” See, e.g., id. at 1:14–16. On the record before us, we preliminarily find that Petitioner’s argument that “data updates” are “data that needs to be sent to the mobile device” (Pet. 19) is consistent with the intrinsic evidence of record. See DePuy, 469 F.3d at 1014. We, therefore, adopt Petitioner’s proposal for purposes of this Decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“‘data updates’ limitation.” Id. at 19 (citing Ex. 1008, 3–7; Ex. 1003 ¶ 63). Petitioner argues, taking Patent Owner’s view, “[i]t would also have been obvious to a POSITA[4] that checking the current version of a digital asset and sending the newest version to a new electronic device would be equally applicable to electronic devices that have received previous versions of the digital asset.” Id. at 19–21 (citing Ex. 1004, 8:57–64, 11:35–44, 13:3–8, 14:52–60; Ex. 1003 ¶¶ 65–67). Petitioner argues a “POSITA would be motivated to deliver and install the most up-to-date version of a digital asset in order to improve user experience, such as providing improvements, new features, or bug fixes to the older digital asset.” Id. at 21 (citing Ex. 1003 ¶ 67).” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,554,196 - PTAB · Apr 16, 2024 · IPR2023-01416 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood of success for method claims 16–20 under Genossar and Barratt ’470.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’477 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’477 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, for purposes of this Petition, the terms should receive their respective plain and ordinary meaning as understood by a [person of ordinary skill in the art].” Pet. 6. Patent Owner asserts that “[n]o claim construction is necessary to deny institution because [Patent Owner] General Access’s arguments for denial do not hinge on any disputed issues of claim interpretation.” Prelim. Resp. 10. For the reasons set forth below, we determine that, as to the independent apparatus claim, Petitioner has not met its burden on its challenges as articulated by Petitioner, but we determine that Petitioner has met its burden for the independent method claim. We need not reach any claim construction issues to make those determinations. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction. However, the parties’ respective positions regarding the anticipation grounds suggest that there may be claim construction disputes regarding terms in independent apparatus claim 1.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5. Patent Owner states that, “[f]or purposes of this preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 4 (citing Pet. 5). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,947,477
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.